The Curious Case of Caterpillar Cakes

Last week, the news broke that Marks & Spencer had launched a claim of infringement against Aldi UK in respect of its caterpillar shaped celebration cake. Marks & Spencer has been selling its Colin the Caterpillar cake reportedly for some 30 years and has taken issue with a lower budget version being offered by Aldi under the name Cuthbert the Caterpillar. The question is whether there is a case to answer and, while the mainstream media has promoted the dispute, and indeed its support for Colin the Caterpillar, all may not be as it seems and here we look at the actual rights Marks & Spencer is seeking to rely upon.

Intellectual property does not protect an idea in itself and the concept of using a Swiss roll type of cake as the basis for a caterpillar was not even an original idea when Marks & Spencer first brought out its own Colin the Caterpillar, as many mums of the 1980s will testify. Aspects of the idea can be protected through intellectual property, such as an artistic work given rise to copyright, a brand name being registered as a trade mark, or a design right or design registration protecting the shape of the product.

Marks & Spencer is seeking to rely on its trade mark rights in the name Colin the Caterpillar and enhanced reputation to prevent the sale of Aldi’s Cuthbert the Caterpillar. However, registered trade mark rights require similarity of the trade marks and likelihood of confusion to be infringed and the average consumer is unlikely to be confused by Colin the Caterpillar and Cuthbert the Caterpillar, given the caterpillar element is descriptive of the shape. Added to this is the fact that many other supermarkets have similar cakes with similar names, such as Asda’s Clyde the Caterpillar, Waitrose’s Cecil the Caterpillar and Tesco’s Curly the Caterpillar, diluting the market.

Marks & Spencer is also seeking to rely on the shape of the cake being an unregistered trade mark. This however will be a difficult ground to succeed on, even with the highly similar shapes and features, given that consumers are generally not deemed to give trade mark significance to shapes, its own cake is also labelled clearly on packaging with the trade marks Colin the Caterpillar and Marks & Spencer, and the shape of the cake is unlikely to be deemed to have trade mark significant to the average consumer as it is not seen fully at the point of purchase.

Aldi will also argue in defence that it does not sell Marks & Spencer branded products in any of its supermarkets, consumers are aware of this and therefore no misrepresentation or damage will arise.

Why would Marks & Spencer bring the case if the outcome is uncertain to be in its favour? Aldi frequently comes as close to well known brands as it possibly can without infringing but Heck Sausages and Brewdog have shown in the past couple of years a new way to deal with the issue – public support and negative media coverage for Aldi.  As the media coverage has shown in the past week, such an approach has potentially as good prospects as the infringement claim, if not better. In this case, it is not certain to succeed however – after withdrawing Cuthbert the Caterpillar in February, Aldi appears to be seeking to outmanoeuvre Marks & Spencer by announcing today that profits from sales of CUTHBERT THE CATERPILLAR will go towards cancer charities.